DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments and Arguments
Applicant’s arguments, filed March 10, 2026, with respect to the rejection(s) under 35 U.S.C. 103 in view of Aramaki et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant argues that the instant claims are not obvious in view of Aramaki (cited in the previous Office Action) as Aramaki fails to disclose wherein the second filler is oriented in the thickness direction of the thermally conductive sheet as recited within amended claim 1. The Office disagrees that Aramaki fails to disclose the claimed limitation as para. [0036] of Aramaki explicitly teaches that the anisotropic thermally conductive filler (e.g., carbon fiber, a “flake particle” see para. [0004] of Aramaki) is oriented in the thickness direction of the thermally conductive sheet, which is construed to read on the instantly recited “flake-like thermally conductive filler is oriented in a thickness direction of the thermally conductive sheet.”
With regard to the amendment requiring a specific particle diameter (D50) of a flake-like filler that is oriented in a thickness direction of the thermally conductive sheet, the broad disclosure of selection of a particle diameter ([0026]) for fillers within the composition is no longer found sufficient to render obvious the claim as amended. Accordingly, the rejection in view of Aramaki is withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Aramaki et al. and Hayasaka et al. (see rejections below).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 4-7, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Aramaki et al. (JP2012023335, English translation provided for citations, hereinafter referred to as “Aramaki”) in view of Hayasaka et al. (KR20140138136, English translation provided for citations, hereinafter referred to as “Hayasaka”).
As to Claim 1: Aramaki teaches a thermally conductive sheet ([0002]) comprising a thermally conductive composition containing a two-component addition reaction type liquid silicone resin (i.e., a curable resin) (see Example 1, [0042]), an anisotropic thermally conductive filler, and a (second) filler ([0010]) which may be a spherical filler ([0031]). Aramaki further contemplates blending of inorganic fillers (e.g., alumina which may be spherical, see [0011]) with anisotropic flake or scale-like particles (e.g., boron nitride, flake particles such as graphite, carbon fibers) to enhance thermal conductivity ([0004]). Aramaki further teaches an exemplary thermally conductive sheet ([0042], Example 1) comprising a two-component addition reaction type liquid silicone resin (i.e., a curable resin), pitch-based carbon fibers (an anisotropic thermally conductive filler as defined by Aramaki [0004]), and spherical alumina particles (a (second) filler as defined by Aramaki [0026]) ([0042], Example 1). While the carbon-fiber anisotropic filler of Example 1 does not appear to inherently meet the limitation of a flake-like filler and Aramaki does not explicitly teach an exemplary composition comprising simultaneously a flake filler and non-flake filler, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the carbon fibers of Example 1 of Aramaki for a flake-like/scale-like filler (e.g., flake particles such as graphite, see [0004]) and the motivation would have been that Aramaki explicitly contemplates that flake particles and carbon fibers are both recognized within the art as suitable anisotropic thermally conductive fillers that increase thermal conductivity when blended with other inorganic fillers (e.g., alumina) ([0004]). Aramaki further teaches that the anisotropic thermally conductive filler (e.g., carbon fiber, a “flake particle” see para. [0004] of Aramaki) is oriented in the thickness direction of the thermally conductive sheet ([0036]), which is construed to read on the instantly recited “flake-like thermally conductive filler is oriented in a thickness direction of the thermally conductive sheet.”
Aramaki teaches particle sizes for fillers that overlap with the claimed range ([0026]), but is silent towards the average particle diameter (D50) of a flake-like thermally conductive filler that is oriented in a thickness direction of the thermally conductive sheet.
Hayasaka teaches a related conductive sheet comprising conductive fine particles ([0001]) wherein said conductive fine particles may be flake or leaf-shaped particles ([0020] and [0027]) having an average particle diameter (D50) of 3 to 50 µm ([0029]), which overlaps with the claimed range. This range overlaps with the claimed range. Aramaki and Hayasaka are considered analogous art because they are directed towards the same field of endeavor, namely, conductive sheets comprising conductive particles. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range for the flake-like filler of Aramaki, and the motivation to have done so would have been, as Hayasaka suggests, that the overlapping portion is a usable range for the particle diameter (D50) of a leaf- or flake-like thermally conductive filler within a thermally conductive sheet to achieve an optimal balance of conductivity and solution stability ([0029]).
Aramaki does not explicitly teach wherein a difference between a thermal resistance load value at a load of 1 kgf/cm2 and a thermal resistance value at a load of 3 kgf/cm2 is 0.4 ˚C∙cm2/W or wherein a difference between a compression ratio at a load of 3 kgf/cm2 and a compression ratio at a load of 1 kgf/cm2 is 20% or more for the thermally conductive sheet. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. thermal resistance load value would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 2: Aramaki teaches the sheet of claim 1 (supra).
Aramaki teaches an exemplary thermally conductive sheet ([0042], Example 1) comprising a two-component addition reaction type liquid silicone resin (i.e., a curable resin) prepared by mixing equal amounts of a silicone A liquid (an organopolysiloxane having a vinyl group) and a silicone B liquid (an organopolysiloxane having an Si-H group) (see [0042], Example 1), which reads on the claimed 5:5 ratio.
As to Claim 4: Aramaki teaches the sheet of claim 1 (supra).
Aramaki does not explicitly teach the peak value of effective thermal conductivity (units: W/m∙K) in a range in which the compression ratio is from 5 to 35%.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., [0066] suggests that effective thermal conductivity is a measured property that results from the composition). Therefore, the claimed effects and physical properties, i.e. peak value of effective thermal conductivity in a range in which the compression ratio is from 5 to 35%, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 5: Aramaki teaches the sheet of claim 1 (supra).
Aramaki further teaches that an exemplary composition comprising a total amount of thermally conductive fillers within the claimed range (e.g., Example 1 of Aramaki,
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As to Claim 6: Aramaki teaches the sheet of claim 1 (supra).
Aramaki further teaches an exemplary composition (Example 1) that is formed into a sheet having at thickness of 0.8 mm ([0077]), which is within the claimed range.
As to Claim 7: Aramaki teaches the sheet of claim 1 (supra).
Aramaki teaches exemplary compositions that exhibit a compression ratio at a load of 3 kgf/cm2 that is 22.5% (Table 2-1 of the foreign reference document), which is within the claimed range.
Furthermore, Aramaki teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. compression ratio, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 12: Aramaki teaches the sheet of claim 1 (supra).
Aramaki further teaches that an exemplary composition comprising a total amount of flake-like thermally conductive fillers within the claimed range (e.g., Example 1 of Aramaki,
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As to Claim 13: Aramaki teaches the sheet of claim 12 (supra).
Aramaki teaches that the filler may have a spherical shape ([0026]) and further teaches that an exemplary composition comprising a total amount of non-flake-like thermally conductive fillers within the claimed range (e.g., Example 1 of Aramaki,
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As to Claim 14: Aramaki teaches the sheet of claim 1 (supra).
Aramaki does not explicitly teach an exemplary composition having the claimed difference between the compression ratio at the load of 3 kgf/cm2 and the compression ratio at the load of 1 kgf/cm2.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Aramaki teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. compression ratio, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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